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Thursday, 1 May 2008

In case you've missed this major date in the patent calendar, the IPKat is pleased to remind you that today's the day the London Agreement enters into force. The Agreement (full name: "The London Agreement on the application of Article 65 EPC", text here) is expected to reduce the cost of patenting through the European Patent Office EPO by reducing the translation requirements for European patents. So far, this Agreement has been ratified in 14 European Patent Convention states (Croatia, Denmark, France, Germany, Iceland, Latvia, Liechtenstein, Luxembourg, Monaco, Netherlands, Slovenia, Sweden, Switzerland and the UK).

What does it all mean? By way of example, the UK IPO explains that, if a European patent that designates the UK as one of the countries in which protection is sought is published in French or German, it is now no longer necessary to file an English translation in order for the patent (or any amendment to it) to have force there. No translation is required for any European patent designating the UK that is granted or amended from 1 February 2008 onwards. More information on the London Agreement can be found here on the European Patent Office website.

The IPKat has heard about the great savings that will be made by patent applicants, but he doesn't think that the income of patent translators will be decimated in consequence. Presumably, in the absence of an official translation into the language of each designated EPC member state, businesses that believe themselves potentially affected by a patent in an alien tongue will each be commissioning their own private, unofficial translations. Merpel says, let's see whether the London Agreement makes a real impact on patent filing strategies of both innovators and their competitors: only then can we know whether the new scheme was worthwhile.

20 comments:

Anonymous
said...

As for the poor translators - I disagree. As the quality of machine translations continues to improve I believe that it is more likely that businesses will use such tools to gain an understanding of whether they are potentially affected by the patent. Only if the (imperfect) machine translation reveals there to be a risk of conflict would businesses spend the large sums required to obtain a manual translation.

Much the same arguments as raised by the commentators on the earlier post about community patents.

Dear IPKAT and MERPEL the thing is that the burden of the translations costs is now on the side of those who need to know the features of the after all "undisclosed" inventions proteted by Patents, and that will be the real impact of the new scheme.

So, Miau, you are a good, law-abiding business, minding your own business, when along comes Troll GmbH with a European patent designating the UK. It's long, it's nasty-looking and it's all in German. The cost to you of getting the thing translated, and then of working out whether whatever you're doing falls within its claims, is greater than the very reasonable licence fee that Troll GmbH appears to be happy with. And Troll GmbH can do this with lots of would-be infringers/licensees ...

Indeed, Miau, we will all be the poorer -- though when no-one reads the patents anyway and the major players are all sitting in their cartels a.k.a. standard setting organizations and are unlikely to be suing each other anyway, we'll all be the richer.

Caractacus, your non-German speaking company could always appoint German speaking counsel to assess whether there is a risk of infringement. Perhaps it is time for EPAs to acquire a working knowledge of all three official languages, as in the good old days before the qualifying examination was simplified.

Under Rule 71(3) EPC, the claims are translated into the other two EPO languages by the applicant before grant and are part of the published patent, so they are always available to third parties in English.

Consequently, an assessment of the scope of the claims is always possible without the need for paying for translations. The UK is priveleged enough as it is in that the language of 70% of European Patents is English anyway, which is not even our merit as a nation, but rather results from English being the lingua franca of scientific research, which in turn largely results from the omnipotence of the US economy and the fact that a large proportion of applications come from the US and for those coming from nations not having English, French or German as an official language, English is the most studied second language.

For the other 30% of EP patents not in English (most of which are in German) we should start improving our language skills. This is not just limited to IP, but extends to us as a nation as a whole. If you can read a patent in German (re the previous last poster) there is no need for expensive translations.

If you are concerned about patents, you need to keep an eye on published EP applications. These are monolingual. So, if they're not in your mother tongue (and you can't find an equivalent that is), you need to translate them (or have them looked at by someone who doesn't need to). Then, if you are still worried, you need to take advice on what valid scope the patent will have when (if) granted. The extra cost of translation on grant will rarely make too much difference - hardly enough to make the difference between accepting a licence under a dubiously valid patent and contesting it.

If it's a granted EP(UK), then what you need is for some independent organisation to consider whether what you're doing infringes the patent (and whether the patent is valid as well, if you like) all for only £200. Contact the Patent Office Opinions service at ... etc

Actually, the Patent Office is still the correct name. The "UK Intellectual Property Office" is only an operating name of the Patent Office. The correct name is still used throughout the Patents Act and Rules. It is therefore legally correct to describe the Patent Office as such, and not correct to describe it as the Intellectual Property Office.

I wonder whether the UK IPO/Patent Office has employed French and German speaking staff to ensure that, when they issue their opinions, their construction of the English-language claims of EP(UK) patents is appropriate in light of the disclosure of the French/German-language description.

In cases where the claims but not the description are in English, I suspect the UK(I)PO will invite, but not require, the parties to submit a translation (or partial translation) should they wish. Without it, I guess they will try to make sense of the claims as they stand without recourse to the description.

This might be seen to be a problem since I've noticed that the UK(I)PO go to great lengths in their opinions to give the description due regard when considering the meaning/scope of the claims. As a general rule, however, this only seems to make any difference when the claims are particularly unclear.

Now, in my view the UK(I)PO don't have particularly stringent clarity requirements compared to the EPO, especially when the inventor is the one who wrote and prosecuted the patent app. You'll see the effects of this in a number of the opinions they've issued - inventors asking if their patent is infringed and half of the opinion being devoted to interpretation/construction - here's a prime example http://www.ipo.gov.uk/op2207.pdf

I'm not saying that all granted EP patents are models of clarity (sadly) but, in my experience, the EPO do stick quite firmly to the requirement that the claims be clear by themselves, sometimes overly stubbornly. So, it should be less burdensome to understand the scope of protection from the claims alone of a granted EP(GB) than you might expect from a review of the opinions on granted GBs.

Personally, I hope to see the EPO continue to stick with this requirement and expect we'll see some BoA decisions highlighting the importance of clarity in the claims in light of the London Agreement.

I also hope that the Protocol on Art 69 doesn't get extended any further than it already has - I'd hate to see some sort of US-style doctrine of equivalents or in Europe requiring reference not only to the description but also the prosecution history.

Thanks for that, Ed. That's essentially what I've been hearing from most of my German sources, but then I received a letter from one German firm via a couple of different US attorneys that essentially said:

"we don't think that retroactive implementation of the London Agreement will be possible. If you want to risk invalidating your patent by not filing a translation into German, please let us know".

I have to say I was gobsmacked by this "advice" from a supposedly professional firm, and the letter caused a great deal of consternation among my US clients so it's good to know that my telling them not to worry too much (just yet) has a good basis.

Back to the topic of machine translation, I had BabelFish translate that DE PO webpage for me and got this interesting new definition for the London Agreement:

The "Londoner convention" on "the law for the improvement of the penetration of rights of the mental property".

The law backdating the implemenation of the London Agreement has still not yet been published. If it is not published by the end of July, the requirement for filing translations of patents granted after May 1 but more than three months before the publication of the new law (when it is published) will need to be considered.

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